Patent Litigation in Canada: A U.S. Attorney’s guide to the Canadian Litigation Process
Canada and the United States are close neighbors. About 300,000 people cross the border each day, and bilateral trade amounts to about $1.6 billion in goods daily. It is not surprising that patent, and other intellectual property disputes, often involve some element of cross-border litigation. The Canadian litigation experience is relatively similar to the American experience. There are, however, some important differences that U.S. attorneys involved in such litigation should be aware of.
- Like in the United States, Canada has federal and provincial/state courts. Both can decide patent cases.
- Litigation process and procedure is dictated by the rules of civil procedure of the court in which litigation has been commenced. Generally, the procedure is similar between the provincial and federal courts. In many courts, case management is common, whereby the equivalent to a deputy judge is assigned to the lawsuit, deals with scheduling and adjudicates most interlocutory disputes.
- Lawsuits are commenced through the issuance by the court of a document called a “statement of claim,” which is similar to a complaint in the United States. Upon being served with such a claim, a defendant may respond by serving a statement of defence. It may also assert counterclaims against a plaintiff, cross-claim against other defendants, or draw in third parties through a third-party claim. All such documentation is referred to as “pleadings.”
- In patent cases, the patentee must be named as a party to the suit, but need not necessarily be a plaintiff, as persons “claiming under” the patentee (e.g., a licensee) may commence an infringement action.
- Once pleadings are closed, parties begin the discovery process. Affidavits of documents are exchanged, which list all of the relevant documents in the possession, power or control of each party to the lawsuit. There are no formal document requests; however, motions can be brought to address perceived deficiencies in documentary production.
- Parties are entitled to conduct a single oral examination for discovery of each opposing party. In most courts, the number of examinations and timing for each is limited. Such examinations are similar to a 36(b) examination in the United States. However, they are not normally video recorded. Transcriptions of discovery evidence may be read into the evidentiary record at trial, but may not be used for other purposes due to the so-called “deemed undertaking” rule. Non-parties may be examined with leave of the court. Questions may be refused during examination and need not be answered at the time. Undertakings may also be given to make inquiries and answer questions at a later time in writing.
- Interlocutory motions regarding the propriety of refusals and sufficiency of answers to undertakings are common. They are generally adjudicated by the equivalent of a deputy judge. Appeals from such judgments are allowed.
- Follow-up or second-round discovery may be allowed. The scope is usually limited to further questions stemming from answers to undertakings or additional documents that have been produced.
- Summary judgment motions may be brought at any time. They are generally supported by a paper record; however, in some instances, oral testimony may be permitted.
- Expert reports are exchanged in advance of trial, usually after documentary and oral discovery are complete. Legislation generally limits the number of experts a party may call at trial; however, the court may allow for additional experts if justified. The parties can also agree to the “hot-tubbing” of their experts.
- In most courts, the parties must attend a pre-trial conference and mandatory mediation prior to trial. In rare circumstances, the parties may be excused from this requirement.
- Trial in Canada rarely occurs before a jury, as there is no constitutional right to trial by jury. Instead, most trials are presided over by a single judge. Appeals generally exist as of right from trial judgments.